Eurasian Patent Office set to extend the scope of its operations

By Catherine Jewell, Communications Division, WIPO

On the eve of the 25^th anniversary of the entry into force of the Eurasian Patent Convention (EAPC), and the establishment of the Eurasian Patent Organization (EAPO), the EAPO’s CEO and President of the Eurasian Patent Office, Ms. Saule Tlevlessova talks to WIPO Magazine about the organization’s recent achievements and its future priorities.

When was the EAPO established?

The EAPC, which created a unitary patent system for the Eurasian region, entered into force on August 12, 1995. That convention provided for the foundation of the EAPO, of which the Eurasian Patent Office (Eurasian Office) is a constituent part. The Eurasian Office began operations on January 1, 1996 and has a staff of 200 professionals and patent examiners.

What is the role of the Eurasian Office?

The Eurasian Office offers high-quality patent services to protect inventions and is responsible for administering the Eurasian patent system. It is an independent, regional patent body headquartered in Moscow in the Russian Federation. The Eurasian patent system is a simple and cost-effective way for applicants to obtain patent protection in all eight EAPO member states by filing a single Eurasian patent application. EAPO member states are: Armenia, Azerbaijan, Belarus, Kazakhstan, Kyrgyzstan, Russian Federation, Tajikistan and Turkmenistan.

The Office also supports the development of the national patent systems within the region. For example, the professional development of staff in national patent offices is one of our top priorities. EAPO also actively promotes intellectual property (IP) awareness and strategic use of patents to boost business growth and economic performance across the region. 

Who uses the Eurasian patent system?

Inventors and businesses from more than 120 countries use the Eurasian patent system. In 2018, we processed 3,488 applications (up 6 percent on 2017), and granted 2,630 patents. As in previous years, the United States, the Russian Federation and Germany accounted for the largest number of Eurasian patent grants. These results underscore the global appeal of the Eurasian system and its importance to the region.

What are the advantages of the Eurasian patent system?

The system’s unitary nature is its main advantage. Once granted, a Eurasian patent is valid in all EAPO member states. The system eliminates the need to file individual applications or to have them examined separately in each EAPO member state. The system is flexible and user-friendly, particularly in terms of amending an application during examination, the restoration of rights lost because an applicant failed to meet certain time limits, and the time it takes to grant a Eurasian patent.

Applicants can also evaluate their chances of obtaining a patent before paying all the fees associated with patent grant. A filing fee is paid at the beginning of the process to cover the cost of the patent search – which enables them to evaluate the patentability of their technology – and the application’s publication. Only when they decide to move forward with their application, do they pay fees for substantive examination, grant and publication of the patent.

The Eurasian system also administers an opposition procedure if the granted patent is challenged and other procedures to allow applicants to appeal Office decisions. It also provides a full range of high-quality patent information services, including the Eurasian Patent Information System (EAPATIS) (see box).

How has the Eurasian patent procedure changed in recent years?

The Eurasian patent system is constantly evolving. Our goal is to provide applicants and patent owners with high-quality, costeffective, user-friendly and efficient patenting services. We recently amended our patent legislation to bring it into line with international best practice. These measures ensure the quality of patent examination and Eurasian patent grants remains high and also makes the system and its procedures more flexible, especially with respect to the restoration of rights, which is good news for applicants. We have also introduced a new procedure that allows third parties to submit observations on the patentability of inventions at the examination phase. This will make EAPO patents even more robust.

Progress has also been made in processing times. We have shortened average processing times by 20 percent, saving around 90 days per application in providing the first feedback on the patentability of the invention. And the backlog in applications pending substantive examination has fallen by 31 percent.

The time is now ripe to extend the scope of EAPO’s operations and to establish a legal protection system for industrial design rights.

Saule Tlevlessova, President of the Eurasian Patent Office (EAPO)

We also recently launched a pilot program to fast-track substantive examination of international applications filed under the PCT entering the EAPO regional phase. This and other similar arrangements are also making the Eurasian system more efficient.

Our work in each of these areas will continue. 

What are the EAPO’s priorities in the short-term?

The focus of the last 25 years has been on establishing the EAPO and ensuring users have access to efficient, cost-effective and user-friendly patent services. In this respect, we have a very successful track record. Given the increasing importance of IP rights in securing business value, the time is now ripe to extend the scope of EAPO’s operations and to establish a legal protection system for industrial design rights that allows businesses to protect their commercially valuable design assets.

We have been working towards this goal since 2017, with the backing of the EAPO’s Administrative Council. And with the invaluable support of WIPO and other partners, we have made rapid progress. A draft international treaty to establish a new regional system of legal protection for industrial designs was approved by EAPO’s Administrative Council in October 2018 and will be submitted for adoption by EAPO member states at a Diplomatic Conference in Astana, Republic of Kazakhstan, later this year.

Why is this move important?

It is important for three main reasons. First, the EAPC and the prospective new design treaty are the only examples of successful cooperation in the field of IP among the countries of the Eurasian region over the past 25 years. The region’s IP community is keen to develop the region’s IP landscape, in particular in relation to the protection of industrial designs.

Second, the proposed new regional industrial design system will enable businesses to quickly and easily protect their commercially valuable designs in multiple markets by filing a single application.

And third, it is an important next step in creating a more favorable IP landscape and broader use of IP across the region. This promises to boost domestic markets and enhance the flow of trade and investment to the region.

Are there any other immediate priorities?

Strengthening our relations with regional and international partners is another important priority. Engagement with national IP offices in the region for enhanced office automation and professional development remains a top priority. We are also further improving our services by working with other IP offices to establish work-sharing arrangements. So far, we have signed Patent Prosecution Highway (PPH) Agreements with the China National IP Administration (CNIPA) and the European Patent Office (EPO) – these launched in October 2017 and April 2018 respectively; a similar agreement with the Japan Patent Office has been extended to February 2021; and in September 2018, we signed a PPH agreement with the Korean IP Office (KIPO) that took effect in January 2019.

The EAPO will continue to play an active and constructive role in shaping the regional and, indeed, the global IP landscape.

Saule Tlevlessova, President of the Eurasian Patent Office (EAPO)

These arrangements mean that inventors and businesses in the countries and regions covered can obtain patents more quickly via a fast-tracked route. As examination outputs are shared between offices, the grant process is faster and the chances of a positive grant decision are higher. These initiatives highlight mutual confidence in the examination approaches and quality of participating offices.

Is the EAPO going digital?

The EAPO is committed to providing our applicants with the most up-to-date services. We have long recognized the advantages of automation and continue to roll out paperless workflow technologies. In 2018, the number of applications filed via the EAPO-ONLINE e-filing system rose above 80 percent. Almost 50 percent of all transactions with applicants during the examination phase are fully paperless. And since 2016, our internal operations have been paperless thanks to our internal electronic dossier system.

In June 2016, the EAPO joined WIPO’s centralized access to search and examination (CASE) system (see box). And in November 2017, we began using the WIPO Digital Access Service (DAS), an electronic system that allows the secure exchange of certified patent applications between participating IP offices. These services generate additional efficiencies and mean we can offer local applicants a new low-cost service to help them in filing their patent applications in countries outside the region.

How do you see the Eurasian patent system evolving in future?

The EAPO will continue to play an active and constructive role in shaping the regional and, indeed, the global IP landscape, to help create the conditions for businesses to compete and thrive in international markets. Data show there is significant scope for applicants from countries experiencing rapid economic growth outside the region – I am thinking, in particular, of South East Asian countries – to protect their IP assets in the Eurasian region. That is why we are redoubling our efforts to familiarize inventors and businesses in those countries with the advantages of the Eurasian patent system.

Regional cooperation on IP is also gaining momentum, so we expect the scope of our operations to grow. At the administrative level, our first priority will be to introduce procedures to protect industrial designs. We also plan to expand the number of work-sharing arrangements with IP offices around the world to ensure users have access to high-quality patenting services. We will continue to monitor opportunities to integrate artificial intelligence and machine learning into our procedures and systems. While these rapidly-evolving technologies promise to generate additional efficiencies, the professionalism of our examination staff will remain central to our work. Our investment in their continuing professional development will ensure they are effective in assessing the most complex emerging technologies, thereby ensuring the EAPO continues to meet the evolving needs of users.